Case 6:20-cv-00945-ADA Document 33-15 Filed 08/23/21 Page 1 of 34
`Case 6:20-cv-00945-ADA Document 33-15 Filed 08/23/21 Page 1 of 34
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`EXHIBIT 14
`EXHIBIT 14
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`Case 6:20-cv-00945-ADA Document 33-15 Filed 08/23/21 Page 1 of 34
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`EXHIBIT 14
`EXHIBIT 14
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`Trials@uspto.gov
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`Paper No. 8
`571.272.7822
`
`Entered: December 18, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DR. MICHAEL FARMWALD and RPX CORPORATION,
`Petitioner,
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00946
`Patent 6,266,518 B1
`_______________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I.
`
`INTRODUCTION
`A.
`Background
`Dr. Michael Farmwald and RPX Corporation (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting institution of inter
`partes review of claims 1, 27, 82, 90, and 91 of U.S. Patent
`No. 6,266,518 B1 (Ex. 1002, “the ’518 patent”). ParkerVision, Inc. (“Patent
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`Owner”) timely filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314.
`Under 35 U.S.C. § 314(a), an inter partes review may be instituted
`only if “the information presented in [the Petition] shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” Inter partes review is instituted
`only if the petition supporting the asserted ground demonstrates “that there is
`a reasonable likelihood that at least one of the claims challenged in the
`petition is unpatentable.” 37 C.F.R. § 42.108(c).
`For the reasons given below, on this record we find that Petitioner has
`established a reasonable likelihood of prevailing only with respect to
`claims 1, 82, 90, and 91 of the ’518 patent. Accordingly, we institute an
`inter partes review of the ’518 patent as to these claims on the grounds set
`forth below.
`
`Related Proceedings
`B.
`The parties represent that the ’518 patent is asserted in ParkerVision,
`Inc. v. Qualcomm, Inc., No. 3:11-cv-00719 (M.D. Fla.). Pet. 1; Paper 5, 1.
`Petitioner also filed an additional petition for inter partes review of U.S.
`Patent No. 6,061,551 (“the ’551 patent”)1 in IPR2014-00947. Paper 5, 1.
`
`
`1 The application issuing as the ’518 patent is a continuation of U.S.
`Application No. 09/176,022, which issued as the ’551 patent. Ex. 1002 at
`[63]; Pet. 4.
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`2
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`The Prior Art
`C.
`Petitioner relies on the following prior art references:
`Polly Estabrook, The direct conversion receiver: Analysis and design
`of the front-end components, 1–396 (1989) (Ph.D. diss., Stanford Univ.)
`(Ex. 1022, “Estabrook”);
`Peter A. Weisskopf, Subharmonic Sampling of Microwave Signal
`Processing Requirements, MICROWAVE JOURNAL 239–40, 242–44, 246–47
`(May 1992) (Ex. 1023, “Weisskopf”); and
`G. Avitabile, et al., S-band digital downconverter for radar
`applications based on GaAs MMIC fast sample-and-hold, 143 (6) IEE
`PROC.- CIRCUITS, DEVICES, AND SYST. 337–42 (1996) (Ex. 1024,
`“Avitabile”).
`
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges the patentability of claims 1, 27, 82, 90, and 91
`of the ’518 patent on the following grounds:2
`
`Reference(s)
`Estabrook
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`Avitabile
`
`Weisskopf
`
`Claim(s) challenged
`Basis
`§ 102(b) 1, 27, 82, 90, and 91
`
`§ 102(b) 1, 27, 82, 90, and 91
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`§ 102(b) 1, 27, 82, 90, and 91
`
`The ’518 Patent
`E.
`The ’518 patent is directed to methods and apparatuses for down-
`converting an electromagnetic (EM) signal by aliasing the EM signal.
`Ex. 1002, Abstract. The methods and apparatuses operate by receiving an
`
`2 Petitioner supports its challenge with a declaration executed by
`Asad A. Abidi, Ph.D. on June 7, 2014 (Ex. 1004, “Abidi Declaration”).
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`EM signal and an aliasing signal having an aliasing rate. Id. at 3:1–3. The
`EM signal is aliased according to the aliasing signal to down-convert the EM
`signal. Id. at 3:3–4. The EM signal can be down-converted to an
`intermediate frequency (IF) signal, a demodulated baseband signal, or a non-
`FM (frequency modulated) signal. Id. at 1:31–35. The term “aliasing”
`refers “to both down-converting an EM signal by under-sampling the EM
`signal at an aliasing rate, and down-converting an EM signal by transferring
`energy from the EM signal at the aliasing rate.” Id. at 3:4–9. An aliasing
`rate is a sampling rate that “is equal to, or less than, twice the frequency of
`the EM carrier signal,” and “[p]referably, . . . is much less than the
`frequency of the carrier signal.” Id. at 22:8–11.
`Figure 82A of the ’518 patent is reproduced below:
`
`
`Figure 82A illustrates an exemplary energy transfer system for down-
`converting an input EM signal. Id. at 66:11–12. In this embodiment, energy
`transfer signal 8210 includes a train of energy transfer pulses having non-
`negligible pulse widths. Id. at 66:26–27. These pulses control switch
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`module 8206, causing the switch to open and close. Id. at 66:25–26. When
`the switch is closed, energy from input EM signal 8204 is transferred to
`storage capacitance 8208. Id. at 66:42–44.
`The relationship between the frequency of the EM carrier signal, the
`aliasing rate, and the intermediate frequency of the down-converted signal is
`set forth in the ’518 patent as: FC= n·FAR ± FIF , where FC is the frequency of
`the EM carrier signal; FAR is the aliasing rate; n identifies a harmonic or sub-
`harmonic of the aliasing rate (generally, n=0.5, 1, 2, 3, 4, . . .); and FIF is the
`intermediate frequency of the down-converted signal. Id. at 23:28–42. In
`one example provided in the ’518 patent, by under-sampling a 901 MHz EM
`carrier signal at 150 MHz using a sub-harmonic of 6, an intermediate signal
`frequency of 1 MHz is obtained. Id. at 28:29–59. The ’518 patent explains
`that, “[c]onventional systems cannot easily offer, or do not allow, this level
`of flexibility in frequency selection” provided by the disclosed method and
`apparatus. Id. at 29:60–61.
`
`Illustrative Claims
`F.
`Claims 1, 82, and 90 are the only independent claims challenged in
`this proceeding. Claim 27 depends from claim 1, and claim 91 depends
`from claim 90. Independent claims 1, 82, and 90 are illustrative of the
`claimed subject matter and are reproduced below:
`1.
`A method for down-converting a carrier signal to a
`baseband signal, comprising the steps of:
`
`(1) receiving a carrier signal that includes at least one of
`amplitude variations, phase variations, or frequency variations
`at a frequency lower than a carrier frequency of the carrier
`signal;
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`(2) sampling the carrier signal over aperture periods to
`transfer energy from the carrier signal at an aliasing rate, the
`aliasing rate determined according to a frequency of the carrier
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`signal divided by N, wherein N indicates a harmonic or sub-
`harmonic of the carrier signal;
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`(3) integrating the energy over the aperture periods; and
`
`(4) generating the baseband signal from the integrated
`energy.
`
`Ex. 1002, 114:55–115:3.
`82. An apparatus for down-converting a carrier signal to a
`baseband signal, the carrier signal including at least one of
`amplitude variations, phase variations, or frequency variations
`at a frequency lower than a carrier frequency of the carrier
`signal, the apparatus comprising:
`
`means for sampling the carrier signal over aperture
`periods to transfer energy from the carrier signal at an aliasing
`rate, the aliasing rate determined according to a frequency of
`the carrier signal divided by N, wherein N indicates a harmonic
`or sub-harmonic of the carrier signal;
`
`means for integrating the energy over the aperture
`periods; and
`
`means for generating the baseband signal from the
`integrated energy.
`
`Id. at 119:44–59.
`90. An apparatus for down-converting a first signal to a
`second signal, comprising:
`
`means for sub-sampling the first signal over aperture
`periods to transfer energy from the first signal;
`
`means for integrating the transferred energy aperture
`periods;
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`means for generating
`integrated energy; and
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`means for impedance matching at least one of said first
`signal and said second signal.
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`the second signal from
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`the
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`Id. at 120:23–33.
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`II.
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`CLAIM CONSTRUCTION
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48, 764, 48,766 (Aug. 14, 2012) (Claim
`Construction). Claim terms are given their ordinary and customary meaning
`as would be understood by a person of ordinary skill in the art at the time of
`the invention and in the context of the entire patent disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
`specification sets forth an alternate definition of a term with reasonable
`clarity, deliberateness, and precision, the patentee’s lexicography governs.
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We apply this standard
`to the claims of the ’518 patent. See Pet. 8 (proposing to construe the terms
`of the ’518 patent in accordance with the broadest reasonable interpretation
`standard); Prelim. Resp. 17 (same).
`In determining whether or not to institute inter partes review, we
`construe claim terms as necessary to apply the references. Claim
`constructions may change as a result of the record developing during trial.
`
`“aliasing rate”
`A.
`The term “aliasing rate” is recited in claims 1, 27, and 82 of the
`’518 patent. Ex. 1002, 114:63–64, 116:18, 119:51. Petitioner requests that
`we construe the term, but recognizes, and we agree, that the term is
`“express[ly] defin[ed] in the specification.” Pet. 10. The ’518 patent defines
`“aliasing rate” as a sampling rate that “is equal to, or less than, twice the
`frequency of the EM carrier signal.” Ex. 1002, 22:8–10. We adopt this
`express definition as the meaning of “aliasing rate.”
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`“transfer energy from the carrier signal”
`B.
`The phrase “transfer energy from the carrier signal” is recited in
`claims 1, 27, and 82 of the ’518 patent. Ex. 1002, 114:63, 116:18, 119:50.
`Petitioner requests that we construe the phrase such that it encompasses
`“transferring energy in any amount.” Pet. 10. Patent Owner asserts that the
`phrase should be construed to mean “transferring energy in amounts that are
`distinguishable from noise.” Prelim. Resp. 20.
`Neither party contends that the phrase is defined expressly in the
`Specification. In such circumstances, we construe the phrase in accordance
`with its ordinary and customary meaning as would be understood by a
`person of ordinary skill in the art at the time of the invention and in the
`context of the entire patent disclosure. Translogic, 504 F.3d at 1257. Aside
`from agreeing with Petitioner that the phrase should be construed in
`accordance with its ordinary and customary meaning, there is no need to
`construe this phrase expressly at this stage of the proceeding.
`
`C.
`
`“integrating the energy over the aperture periods”/
`“integrating the transferred energy over the aperture periods”
`The phrase “integrating the energy over the aperture periods” is
`recited in claims 1, 27, and 82 (Ex. 1002, 115:1, 116:18, 119:55–56), and the
`phrase “integrating the transferred energy over the aperture periods” is
`recited in claims 90 and 91 (id. at 120:27, 34). The parties agree that
`“integrating” is synonymous with “accumulating.” Pet. 13; Prelim.
`Resp. 22. Patent Owner, however, also asserts that the phrases “the energy”
`and “the transferred energy” refer to “energy transferred from a carrier
`signal, where the carrier signal has been sampled at an aliasing rate over
`multiple aperture periods.” Prelim. Resp. 21–22. Patent Owner thus
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`contends that “the energy” and “the transferred energy” are “integrated
`(i.e., accumulated) over multiple ‘aperture periods.’” Id. at 22.
`Patent Owner’s additional assertion pertains more to the “over the
`aperture periods” portion of the claim phrase. Claim 1 recites, inter alia,
`“sampling the carrier signal over aperture periods.” Ex. 1002, 114:62
`(emphasis added). Thus, we agree that the carrier signal is sampled over
`more than one aperture period. The phrase “integrating . . . over the aperture
`periods,” which appears in the subsequent step of claim 1, however, does not
`indicate clearly whether the energy (or the transferred energy in the case of
`claims 90 and 91) sampled during a given aperture period must be integrated
`over more than one aperture period or whether the energy can be integrated
`over the aperture period in which it is sampled. For example, if there are
`two aperture periods, claim 1 does not appear to require that the energy
`sampled in aperture period one be integrated over both aperture periods one
`and two as opposed to being integrated over only aperture period one and the
`energy sampled during aperture period two integrated over aperture period
`two. In other words, the broadest reasonable interpretation in light of the
`Specification is that the energy sampled in an aperture period can be
`integrated over that aperture period or over that aperture period and
`subsequent aperture periods. In either situation, the energy transferred from
`the carrier signal when sampling the carrier signal over aperture periods is
`integrated “over the aperture periods.”
`Accordingly, we construe the phrase “integrating the energy over the
`aperture periods” to mean “accumulating the energy over the aperture
`periods” and the phrase “integrating the transferred energy over the aperture
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`periods” to mean “accumulating the transferred energy over the aperture
`periods.”
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`D.
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`“means for sampling the carrier signal over aperture periods to
`transfer energy from the carrier signal at an aliasing rate”/
`“means for sub-sampling the first signal over aperture periods
`to transfer energy from the first signal”
`The phrase “means for sampling the carrier signal over aperture
`periods to transfer energy from the carrier signal at an aliasing rate” is
`recited in claim 82 (Ex. 1002, 119:49–51), and the phrase “means for sub-
`sampling the first signal over aperture periods to transfer energy from the
`first signal” is recited in claims 90 and 91 (id. at 120:25–26, 34). The parties
`do not dispute, and we agree, that these claim phrases are drafted in means-
`plus-function format. Pet. 20–21; Prelim. Resp. 27–29.
`“The first step in construing a means-plus-function claim limitation is
`to define the particular function of the claim limitation.” Golight, Inc. v.
`Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004) (citation
`omitted). Petitioner asserts that the function is “transferring energy – in
`either ‘negligible amounts’ or ‘non-negligible amounts.’” Pet. 20. Patent
`Owner contends that the function must be limited to transferring energy that
`is “distinguishable from noise.” Prelim. Resp. 27.
`The functions clearly recited in each claim phrase are “sampling the
`carrier signal over aperture periods” and “sub-sampling the first signal over
`aperture periods,” respectively. The results of such sampling and sub-
`sampling are the “transfer [of] energy from the carrier signal at an aliasing
`rate” and “transfer [of] energy from the first signal,” respectively. Whether
`we construe the claim phrases to require the functions to include transferring
`energy or whether transferring energy is a result of the sampling, is a
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`distinction without a difference because the parties identify the same
`corresponding structure, with one distinction discussed below.
`“The next step in construing a means-plus-function claim limitation is
`to look to the specification and identify the corresponding structure for that
`function.” Golight, 355 F.3d at 1334. The “structure disclosed in the
`specification is corresponding structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” Id. (citation and quotation omitted).
`Petitioner asserts that the corresponding structure is identified as “a
`switch module as shown in FIGS. 28A-D, 66A-D, 78A or 82A.” Pet. 21.
`Petitioner states that “[w]hile these switch modules need a control signal, the
`specification describes the circuitry for generating the control pulse as
`‘optional,’ (Ex. 1002[,] 100:10–61) so it is not corresponding structure.” Id.
`at 20 (citing Micro Chem., Inc. v. Great Plain Chem. Co., 194 F.3d 1250,
`1257–58 (Fed. Cir. 1999)).
`Patent Owner does not disagree with Petitioner’s position that a
`corresponding structure is a switch module as shown in Figures 28A–D,
`66A–D, 78A or 82A, but contends that the corresponding structure must also
`include “a control signal generator/energy transfer signal module.” Prelim.
`Resp. 28. Patent Owner points to Figure 69 of the ’518 patent, asserting that
`it “illustrates an energy transfer system with an energy transfer signal
`module 6902 (e.g., a control signal generator) that provides a control signal
`to the energy transfer module 6304.” Id. (citing Ex. 1002, 100:11–17).
`Patent Owner explains that “[a]lthough the energy transfer signal
`module 6902 is labeled as ‘optional,’ this module is a necessary structure
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`for pperformingg the samplling and suub-samplinng functionns of claimss 82 and
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`Patennt 6,266,5
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`90.” Id.
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`The issuue before uus is whetheer the Speccification cclearly linkks the
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`contrrol signal ggenerator/eenergy trannsfer moduule to the fufunction of f sampling
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`the ccarrier signnal over aperture periiods. The
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`’518 patennt Specificaation very
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`clearrly identifiies the enerrgy transfeer signal mmodule 69022 as “optioonal.” See
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`Ex. 11002, 100:13-15 (“Thhe energy transfer syystem 69011 includes aan optionaal
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`energy transferr signal moodule 69022 . . . .” (emmphasis addded)). An
`identified
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`funcction of thee energy traansfer signnal module
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`is “generaating the ennergy
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`transsfer signal 6306.” Idd. at 100:166–17. The
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`energy traansfer systeem 6901,
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`“whiich is an exxample emmbodiment of the enerrgy transfeer system 66302,” is
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`showwn in Figurre 69. Id. aat 100:11––13. Figuree 69 is shoown below
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`Figure 669 “illustrattes an enerrgy transfeer system wwith an opttional
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`energy transferr signal moodule accorrding to ann embodimment of the
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`Id. aat 7:28–30 (emphasis added). Inn Figure 699 and its c
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`orrespondiing
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`desccription in ccolumns 1000 and 1011, energy trransfer siggnal modulle 6902 is
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`repeatedly discclosed as ooptional. F
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`urther, thee function oof the enerrgy transferr
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`invention..”
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`signaal module is describeed as “geneerating thee energy traansfer signnal.” This
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`funcction is not the same aas either “ssampling thhe carrier
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`signal overr aperture
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`perioods” or “traansfer[ing]] energy frrom the carrrier signall” as reciteed in
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`claimm 82, or the similar fufunctions reecited in cllaims 90 annd 91.
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`Additionnally, the ’518 patentt Specificaation disclooses an embbodiment,
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`s describedd
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`showwn in Figurre 63, of “aan energy ttransfer syystem 63022,” which i
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`as “aan exemplaary embod
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`iment of thhe generic
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`aliasing syystem 13022 in
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`FIG.. 13.” Id. aat 96:54–56. Figure 63 is showwn below.
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`Figure 663 “illustrattes a blockk diagram oof an energgy transferr system
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`accoording to ann embodimment of the invention..” Id. at 6::66–67. Fiigure 63 is
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`desccribed as onne of the “iimplementtation exammples” thatt “transferss energy
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`fromm the EM signal . . . aat the aliasiing rate of
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`igure 63, aand its desccription in the
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`at 966:63–65. AAs reflectedd above, F
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`Speccification, ddo not incllude the ennergy transsfer signal mmodule off Figure 69
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`yet FFigure 63 iis describedd as an emmbodiment
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`of the inveentive enerrgy transfe
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`systeem.
`s, we are
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`In light oof the precceding disccussion andd the recordd before u
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`ociates thee function
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`not ppersuaded that the Sppecificationn clearly liinks or ass
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`of “ssampling thhe carrier ssignal overr aperture pperiods to
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`transfer ennergy fromm
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`the energyy transfer ssignal.” Idd.
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`the carrier signal” as recited in claim 82, or the similar function recited in
`claims 90 and 91, to the energy transfer signal module. Thus, the energy
`transfer signal module structure does not correspond to the recited functions.
`Accordingly, the corresponding structure is a switch module as shown in
`Figures 28A–D, 66A–D, 78A or 82A.
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`E.
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`“means for integrating the energy over the aperture periods”/
`“means for integrating the transferred energy over the aperture
`periods”
`The phrase “means for integrating the energy over the aperture
`periods” is recited in claim 82 (Ex. 1002, 55–56), and the phrase “means for
`integrating the transferred energy over the aperture periods” is recited in
`claims 90 and 91 (id. at 120:27–28, 34). Petitioner asserts that these claim
`phrases are drafted in means-plus-function format. Pet. 21–22. Patent
`Owner does not propose a construction for these phrases.
`We agree that these phrases are drafted in means-plus-function
`format. The function recited in each phrase is “integrating the energy over
`the aperture periods” and “integrating the transferred energy over the
`aperture periods,” respectively. For the reasons discussed previously in the
`context of our construction of the phrases “integrating the energy over the
`aperture periods” and “integrating the transferred energy over the aperture
`periods,” we note that “integrating” is synonymous with “accumulating” and
`that our discussion of the phrase “over the aperture periods” applies with
`respect to the functions recited here as well.
`Petitioner asserts that the Specification discloses a capacitor, either in
`series or in shunt to ground, as shown in Figures 29C, 29F, 68C, and 68F, as
`the corresponding structure for performing the recited functions. Pet. 21.
`
`
`
`
`14
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`IPR2014-00946
`Patent 6,266,518 B1
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`
`The ’518 patent Specification does not appear to use the phrase
`“integrating the energy” outside of the language of the claims. The
`Specification does refer to accumulating charge. See, e.g., Ex. 1002,
`103:30–33 (describing storage modules 7614 and 7620). The Specification
`describes example implementations of a storage module as a reactive storage
`module, which is “a storage module that employs one or more reactive
`electrical components to store energy transferred from the EM signal.” Id. at
`99:40–43. The Specification explains that “[r]eactive electrical components
`include, but are not limited to, capacitors and inductors.” Id. at 99:43–45.
`These reactive electrical components are shown, inter alia, in Figures 68A–
`F. Thus, the Specification clearly links the recited functions to the
`corresponding structures of the reactive electrical components shown, inter
`alia, in Figures 68A–F, examples of which are capacitors and inductors.
`Accordingly, we construe the corresponding structure for performing
`the recited functions of “integrating the energy over the aperture periods”
`and “integrating the transferred energy over the aperture periods,”
`respectively, as the reactive electrical components shown, inter alia, in
`Figures 68A–F, examples of which are capacitors and inductors.
`
`F. Other Terms
`While Petitioner and Patent Owner present constructions for several
`other claim terms, no other terms require express construction at this initial
`stage.
`
`
`
`
`15
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`
`III. ANALYSIS
`A.
`Anticipation by Estabrook
`1.
`Claims 1 and 27
`Claims 1 and 27 recite, inter alia, “receiving a carrier signal that
`includes at least one of amplitude variations, phase variations, or frequency
`variations.” Ex. 1002, 114:58–60. Petitioner asserts that Estabrook
`discloses each and every element of claims 1 and 27 of the ’518 patent.
`Pet. 34–38. In particular, Petitioner asserts that Estabrook “describes
`receiving a carrier signal, denoted as ‘IRF.’” Pet. 35 (citing Ex. 1022, [248],
`Fig. 82(a)).3 Petitioner further contends that “Estabrook describes her
`receiver as working well with many types of modulation, including AM,
`FM, QPSK and QAM.” Id. (citing Ex. 1022, 9–10).
`Patent Owner asserts that Petitioner relies upon different embodiments
`in Estabrook to show the above-recited element of the claims. Prelim.
`Resp. 34–36. In particular, Patent Owner contends that Petitioner has not
`shown that the circuit illustrated in Figure 82(a) receives a carrier signal
`including at least one of amplitude variations, phase variations, or frequency
`variations. Id. at 35. Rather, Patent Owner argues that Petitioner’s citation
`to Estabrook, pages 9 and 10, refers to Figure 4, not Figure 82(a). Id.
`According to Patent Owner, Petitioner has not established that Estabrook
`discloses all of the elements arranged as in the claims, and thus, has not
`established that Estabrook anticipates those claims. Id. at 34–36.
`Estabrook is directed to the analysis and design of a direct conversion
`receiver. Ex. 1022, 24. While Estabrook describes the ability of “this
`receiver” to work with “many modulation schemes” (Ex. 1022, 32),
`
`3 Exhibit pin citations are to the page numbers of the exhibit, rather than the
`page number of the particular reference included as the exhibit.
`
`
`
`
`16
`
`
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`Petitioner has not explained sufficiently how the embodiment shown in
`Figure 82(a), which “depicts the optimized single-ended mixer” (Ex. 1022,
`245), corresponds, if at all, to the receiver discussed in Estabrook’s
`Introduction in the context of Figure 4. For a ground of unpatentability
`based on anticipation, it is not enough that Estabrook includes disparate
`teachings that one of ordinary skill in the art might somehow combine to
`arrive at the invention embodied in claims 1 and 27. See NetMoney, Inc. v.
`Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Accordingly, on the record before us, Petitioner has not established a
`reasonable likelihood of prevailing on the assertion that Estabrook
`anticipates claims 1 and 27.
`
`Claim 82
`2.
`As reflected above, claim 82 recites “[a]n apparatus for down-
`converting a carrier signal . . ., the carrier signal including at least one of
`amplitude variations, phase variations, or frequency variations at a frequency
`lower than a carrier frequency of the carrier signal . . . .” Ex. 1002, 119:44–
`48. Petitioner does not address whether this phrase, which appears in the
`preamble of claim 82, is limiting. Pet. 38. Petitioner, however, identifies
`the same disclosure of Estabrook (as discussed with respect to this element
`of claim 1) as allegedly disclosing the elements claimed. See id. (discussing
`the preamble of claim 82). Patent Owner contends that these elements of the
`preamble should be limiting because they are “‘necessary to give life,
`meaning, and vitality’ to the claim.” Prelim. Resp. 39 (citations omitted).
`We agree that the phrase is limiting. “[T]he carrier signal” recited in
`the body of independent claim 82 relies upon the recitation in the preamble
`of “the carrier signal including at least one of amplitude variations, phase
`
`
`
`
`17
`
`
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`variations, or frequency variations at a frequency lower than a carrier
`frequency of the carrier signal” for completeness, and is necessary to give
`“life, meaning, and vitality,” to the claim. See id. at 39 (citations omitted).
`Accordingly, for the reasons we discussed in the context of claims 1 and 27,
`on the record before us, Petitioner has not established a reasonable
`likelihood of prevailing on the assertion that Estabrook anticipates claim 82.
`
`Claim 90
`3.
`Petitioner asserts that Estabrook discloses each and every element of
`claim 90 of the ’518 patent. Pet. 40–42. Petitioner provides an
`element-by-element analysis of where Estabrook allegedly discloses each
`limitation of the claim. Id.
`Patent Owner asserts that Estabrook does not disclose “means for sub-
`sampling” and “means for integrating.” Prelim. Resp. 42. With respect to
`the “means for sub-sampling” recitation of claim 90, Patent Owner relies
`upon its argument directed to the “means for sampling the carrier signal”
`element of claim 82. Id. (referring to Section IV.A.2. of the Preliminary
`Response). Patent Owner asserts that Estabrook does not disclose “means
`for sub-sampling” because Estabrook does not disclose “a control signal
`generator that generates a control signal of pulses.” Id. at 40.
`As discussed in our construction of the phrase “means for sub-
`sampling the first signal over aperture periods to transfer energy from the
`first signal,” on the record before us, we are not persuaded that the
`’518 patent Specification clearly links or associates the function of “sub-
`sampling the first signal over aperture periods to transfer energy from the
`first signal” to the energy transfer signal module (also referred to by the
`
`
`
`
`18
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`Patent Owner as the control signal generator). See supra Section II.D.
`Thus, Patent Owner’s argument is not persuasive.
`With respect to the “means for integrating” recitation of claim 90,
`Patent Owner relies upon its argument directed to the “means for integrating
`the energy over the aperture periods” element of claim 82 (id. at 42)
`(referring to Section IV.A.2. of the Preliminary Response), which, in turn,
`relies upon Patent Owner’s argument directed to the “integrating the energy
`over the aperture periods” element of claim 1 (id. at 42 (referring to
`Section IV.A.1.c.)). Patent Owner’s argument directed to this element of
`claim 1 is based on Petitioner’s alleged failure to “explain how the filter
`capacitor CLD of Estabrook accumulates energy over multiple aperture
`periods.” Id. at 38.
`“[I]ntegrating the energy over the aperture periods” is a step of
`method claim 1. “[M]eans for integrating” of claim 90, however, is drafted
`as a means-plus-function limitation, as discussed above, and, thus, Petitioner
`must show that Estabrook discloses the same structure or an equivalent
`thereof. In construing the phrase, we identified the corresponding struct
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